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CA$H BASH Dilution Needs More Than Niche Fame

Posted by James Juo | Apr 19, 2023 | 0 Comments

Trademark dilution is limited to “truly famous marks such as Budweiser beer, Camel cigarettes, and Barbie dolls.” Dahon N. Am., Inc. v. Hon, No. 2:11-cv-05835-ODW(JCGx), 2012 WL 1413681, at *9 (C.D. Cal. Apr. 24, 2012). “[T]he gravamen of the famousness inquiry is whether or not a mark is genuinely famous without question to the public at large.” USA Nutraceuticals Group, Inc. v. Musclepharm Corp., No. 11-80960-Civ-SCOLA, 2012 WL 13019035, at *3 (S.D. Fla. May 17, 2012) (“The Court finds that the Plaintiffs' allegations of mere ‘good will and name-recognition' within a particular subdivision or a niche market of the public do not arise to this requisite magnitude of famousness.”); see also Kason Indus., Inc. v. Allpoints Food Service Parts & Supplies, LLC, No. 3:17-cv-26-TCB, 2018 WL 1980370, at *2– 3 (N.D. Ga. Mar. 6, 2018) (finding that plaintiff's marks were not famous because the “complaint makes it clear that its marks are well-known only within the commercial refrigeration and restaurant equipment hardware market” and “[t]his ‘niche fame,' however, is outside of Congress's intended scope”).

“[A] mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner.” 15 U.S.C. § 1125(c)(2)(A). The Court may look to factors including (1) the “duration, extent, and geographic reach of advertising and publicity of the mark”; (2) the “amount, volume, and geographic extent of sales of goods or services offered under the mark”; (3) the “extent of actual recognition of the mark”; and (4) whether “the mark was registered.” 15 U.S.C. § 1125(c)(2)(A)(i)–(iv). “[W]hether a mark is ‘famous' is a legal conclusion.” Brookwood Funding, LLC v. Avant Credit Corp., Inc., 1:14-cv-2960-SCJ, 2015 WL 11504556, at *4 (N.D. Ga. July 28, 2015); Crossfit, Inc. v. Quinnie, 232 F. Supp. 3d 1295, 1308–09 (N.D. Ga. 2017) (finding that plaintiff successfully alleged that it had a famous mark).

Niche Fame of the CA$H BASH Gambling Game

In Epic Tech, LLC v. SpinX Games Limited, No. 1:22-cv-02043-SCJ (N.D. Ga. Apr. 13, 2023), the Northern District of Georgia found that the CA$H BASH mark was not famous to the general public. It was not enough that (1) the CA$H BASH mark was federally registered, (2) the CA$H BASH gambling game is in 150 locations throughout the United States, (3) CA$H BASH is recognized by owners, operators, and patrons of the locations where the games are located.

At best, such allegations would only show that the CA$H BASH mark is famous in the niche market of physical gambling locations. But the Court found that no inference can be deduced from such factual allegations that the “CA$H BASH mark was famous to the general public or well-known outside its niche market.

The Court dismissed the dilution claim without prejudice, but granted leave to amend the complaint.

The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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